It takes muscle to avoid. Not strained, forced muscle; but strength that’s supple, agile, free-flowing: that’s the tone of a healthy brand.

Yet, Harley-Davidson is using all its muscle and threatening people… all disguised as protecting brand equity. It can only lead to more legal costs and is often the case, bad press.

So what’s the background? It seems that H-D is fresh off a boot butt kicking contest with the Marlon Brando estate — Brando Enterprises LP — along with Wolverine Worldwide Inc., and agreed to settle a suit over the unlicensed use of the Brando name on a Harley-branded boot that resembled the ones Brando wore when he played Johnny Strabler in the 1953 movie “The Wild One.” That whole gig had to have cost the company some pocket change just to run it through the court system process only to get to the point of where all parties mutually decided to “agree” that there wasn’t any infringement.

It’s no secret, the motor company has an extensive licensing business, and last year it generated $43.2M selling the rights to use its name on products ranging from jewelry to cake decorations.

Not satisfied with their “boot win” the trademark bloodhounds at H-D decided that a 6-week old forum web site called HarleySpace.com was threatening one of the world’s most recognized brands and told the owner to “cease and desist” using the name because it’s a trademark infringement. Huh? Doesn’t this show just how far they’ll go in pursuing the exclusivity of a famous trademark?

The owner of the site, James Coulbourne did what most of us would do and hired an attorney. Not just any lawyer, but Fritz Clapp, who is most often known for representing the Hells Angels Motorcycle Club (HAMC) in intellectual property cases and goes by the name “lawyer from Hell” on his website. Having sued the Walt Disney Co., Marvel Comics, and the late fashion designer Alexander McQueen to protect the HAMC name, Mr. Clapp knows a little bit about trademark law/infringement and enthusiastically took on the case at no charge!

If you do a Google search you’ll find that there are many, many other motorcycle blogs and social media sites with the name Harley in them. They are clearly noncommercial and are easily and immediately distinguishable from the commercial merchandise offered and sold bearing the Harley brand. So what’s their beef? It seems that Mr. Coulbourne sent emails to Harley-Davidson dealerships promoting his 6-week-old website and that sent the trademark boys over the abyss.

As educated consumers we know that great brands have a core clarity to them. Enthusiasm spreads the message. It also unburdens the company from having to force-feed passion for the brand and they should no longer be focused on convincing. Instead, their goal should be revealing. Others testify to H-D attributes and for this to happen, they need to give up some control because the core H-D brand identity is firmly in hand.

UPDATE: April 25, 2012 – Last week (April 20th), Mr. Coulbourne changed the name of his biker social-networking site from HarleySpace.com to IronRides.com.

“You better lawyer up a-hole, because I’m not coming back for 30%. I’m coming back for everything!” — The Social Network.

It seems that H-D has shot itself in the foot. Almost literally. We all know that H-D is a company who has vigorously protected its own brand, but it is now faced with and being sued for the unlicensed use of another brand. It seems the so-called “Brando” boot is stepping on all the wrong people! Wealthy people. People that just do lunch. People, who have their people, call your people. People who have attorney’s. Isn’t that how Hollywood works?!

At the heart of the issue is the alleged misappropriation of the right of publicity as the boot “resembles” a leather boot that Marlon Brando wore in the iconic biker movie “The Wild One.” The case is Brando Enterprises LP v. Harley-Davidson Motor Company, Inc., SC 112654, CA. Superior Court (Santa Monica).

Brando Enterprises is a an operating entity which was created by the Marlon Brando Living Trust to manage core business interests including Brando licensing activities, preservation and archiving of Brando memorabilia. The suit was filed by entertainment and licensing attorney Jeffrey I. Abrams, Esq. of Los Angeles. He stated that the Brando Enterprises mission is to protect the Marlon Brando name and they will pursue any company or individual who infringes on those rights meant to benefit the Brando family. Brando Enterprises is represented for licensing by Brand Sense Partners, LLC.

The "Brando" Boot From The Wild One Movie

The suit seeks an injunction to stop Harley-Davidson from infringing and misappropriating the Brando name and to recover damages caused by the sales and marketing of the unlicensed “Brando” boot.

Back in 2009 I blogged how the same company entered into an agreement with Triumph Motorcycles (based in Hinckley, Leicestershire) for the design and recreation of a leather jacket worn by Brando in the “The Wild One” movie. In that movie Brando starred as the motorcycle gang leader, Johnny Strabler who rode a 1950 Triumph Thunderbird 6T. The jacket was a modern day replica which included key features of Brando’s original jacket right down to the embroidered ‘Johnny’ name tag and the BRMC distressed print on the back of the jacket.

The Black Rebel Motorcycle Club (BRMC for short) is an American alternative rock band from San Francisco. They formed in 1998 and took the name from Marlon Brando’s motorcycle gang in the 1953 film, The Wild One. In the film the gang was referred to Black Rebels MC.

But, I smell a legal battle because Marlon Brando’s estate signed off on a new project with Triumph Motorcycles to debut Brando-related apparel at the company’s dealerships. As you may recall Brando played a tough biker gang leader Johnny Strabler and rode a 1950 Triumph Thunderbird 6T. The Triumph Legends Line will offer replica leather jackets inspired by the movie. The replica includes key features of Brando’s original jacket right down to the embroidered ‘Johnny‘ name tag and the BRMC (Black Rebel Motorcycle Club) distressed print on the back of the jacket. They are also developing Brando print men’s and ladies’ T-shirts.

All of this will likely add to the “what-to-wear” debate and whether you’ll get beat down for imitating or wearing so-called “colors” of a motorcycle club (i.e. SOA: Son’s of Anarchy or BRMC). Maybe you’re indifferent. If so you wreak more Brando than you think. He was famous in the movie for being outright contemptuous for contemporary middle-class society. Asked what he was rebelling against and his response was “What have you got?”